Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1099559
`12/04/2020
`
`Filing date:
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91231624
`Plaintiff
`Rolex Watch U.S.A., Inc.
`BETH M. FRENCHMAN
`GIBNEY ANTHONY & FLAHERTY LLP
`665 FIFTH AVENUE
`NEW YORK, NY 10022
`UNITED STATES
`Primary Email: bfrenchman@gibney.com
`Secondary Email(s): docketing@gibney.com, jdupler@gibney.com, as-
`gro@gibney.com, pcousins@gibney.com, trademark@gibney.com, bw-
`brokate@gibney.com, ang@gibney.com
`212-906-3334
`
`Submission
`Filer's Name
`Filer's email
`Signature
`Date
`Attachments
`
`Plaintiff's Notice of Reliance
`Adam Sgro
`asgro@gibney.com, bfrenchman@gibney.com
`/Adam Sgro/
`12/04/2020
`01664978.PDF(5408393 bytes )
`
`
`ESTTA Tracking number:
`ESTTA1099559
`12/04/2020
`
`Filing date:
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91231624
`Plaintiff
`Rolex Watch U.S.A., Inc.
`BETH M. FRENCHMAN
`GIBNEY ANTHONY & FLAHERTY LLP
`665 FIFTH AVENUE
`NEW YORK, NY 10022
`UNITED STATES
`Primary Email: bfrenchman@gibney.com
`Secondary Email(s): docketing@gibney.com, jdupler@gibney.com, as-
`gro@gibney.com, pcousins@gibney.com, trademark@gibney.com, bw-
`brokate@gibney.com, ang@gibney.com
`212-906-3334
`
`Submission
`Filer's Name
`Filer's email
`Signature
`Date
`Attachments
`
`Plaintiff's Notice of Reliance
`Adam Sgro
`asgro@gibney.com, bfrenchman@gibney.com
`/Adam Sgro/
`12/04/2020
`01664978.PDF(5408393 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`ROLEX WATCH U.S.A., INC.,
`
`Opposition No.: 91231624
`
`
`
`Serial No.: 79172020
`
` Opposer
`
`PWT A/S
`
`vs.
`
`
`
`
`
` Applicant.
`
`
`
`
`
`OPPOSER’S SECOND NOTICE OF RELIANCE
`
`Official Records and Internet Evidence
`
`Pursuant to 37 C.F.R. § 2.122, and Rule 704 of the TBMP, Opposer, Rolex Watch
`
`U.S.A., Inc. (“Rolex”) submits this Second Notice of Reliance. Specifically, Rolex seeks to rely
`
`upon the official records of the Trademark Trial and Appeal Board (“TTAB”), USPTO, and
`
`internet evidence attached as Exhibit A. Rolex is submitting this evidence to show that from
`
`2009 through 2017 Rolex has taken active steps and continues to take active steps to protect and
`
`enforce its Crown Design trademark.
`
`Rolex also seeks to rely upon the official records of the United States District Court
`
`Middle District of Florida, Tampa Division, attached as Exhibit B. Rolex is submitting this
`
`evidence to show that Rolex has taken active steps to protect and enforce its Crown Design
`
`trademark.
`
`The records in Exhibit A include the following:
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`
`
`
`1)
`
`2)
`
`3)
`
`4)
`
`5)
`
`6)
`
`7)
`
`8)
`
`9)
`
`10)
`
`Rolex’s Notice of Opposition filed against the Application No. 77405892;
`
`Rolex’s Notice of Opposition filed against the Application No. 85835860;
`
`Rolex’s Notice of Opposition filed against the Application No. 85697658;
`
`Rolex’s Notice of Opposition filed against the Application No. 79145710;
`
`Rolex’s Notice of Opposition filed against the Application No. 79145541;
`
`Rolex’s Notice of Opposition filed against the Application No. 86446646;
`
`Rolex’s Notice of Opposition filed against the Application No. 86756557;
`
`Rolex’s Notice of Opposition filed against the Application No. 79176756;
`
`Rolex’s Notice of Opposition filed against the Application No. 87204867;
`
`Rolex’s Notice of Opposition filed against the Application No. 87307898; and
`
`
`
`11) A list of proceedings in the TTAB where Rolex has asserted its rights to the
`CROWN DESIGN trademark, namely Reg. No. 0657756, taken from https://ttabvue.uspto.gov
`on November 17, 2020.
`
`
`The records in Exhibit B include the following:
`
`12)
`The complaint filed by Rolex in the case Rolex Watch U.S.A., Inc. v. Humza
`Jewelers Inc., et al. 16-cv-02219, in the Middle District of Florida.
`
`Dated: December 4, 2020
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ROLEX WATCH U.S.A., INC.
`
`__/Beth Frenchman/________
`Beth Frenchman (bfrenchman@gibney.com)
`Adam Sgro (asgro@gibney.com)
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`T: (212) 688-5151
`F: (212) 688-8315
`
`
`By:
`
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing Second Notice of Reliance has been
`served on this day of December 4, 2020, by electronic mail to:
`
`
`
`
`
`
`
`ipmail@dykema.com, efingerhut@dykema.com and mgentner@dykema.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Veronika Sostak/____
`Veronika Sostak
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA264448
`02/04/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Rolex Watch U.S.A., Inc.
`03/04/2009
`
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`
`Attorney
`information
`
`Peter Cousins
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`pcousins@gibney.com Phone:212-688-5151
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77405892
`02/04/2009
`
`Publication date
`Opposition
`Period Ends
`
`11/04/2008
`03/04/2009
`
`The Royal Fleecery, Inc.
`110 Cloudland Park Road
`Dahlonega, GA 30533
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 014. First Use: 2007/06/01 First Use In Commerce: 2007/06/01
`All goods and services in the class are opposed, namely: Jewelry
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`657756
`
`01/28/1958
`
`Application Date
`
`04/02/1957
`
`Foreign Priority
`Date
`
`NONE
`
`ROLEX001870
`
`
`
`Word Mark
`Design Mark
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class U027 (International Class 014). First use: First Use: 1941/01/15 First Use
`In Commerce: 1943/06/01
`TIMEPIECES OF ALL KINDS AND PARTS THEREOF
`
`Attachments
`
`72027385#TMSN.gif ( 1 page )( bytes )
`The Royal Fleecery Opposition (signed pdf).pdf ( 3 pages )(114589 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Peter Cousins/
`Peter Cousins
`02/04/2009
`
`ROLEX001871
`
`
`
`IN THE UNITED STATES PATENT AND TRAEMAR OFFICE
`BEFORE THE TRAEMARK TRIAL AND APPEAL BOAR
`
`In the Matter of Application Serial No. 77405892
`Mark opposed: Design Only: Shown as a five prong crown
`open at the top design; Design Code: ( 24.11.02)
`Filing Date: February 26, 2008
`Published in the Official Gazette on: October 15,2008
`
`---- - --- - ----- ---- ------ ---- ------- -- - --- --- - --- -- - -- - -- -- -- )(
`ROLE)( WATCH U.S.A., INC.,
`
`Opposer,
`
`v.
`
`THE ROYAL FLEECERY, INC.
`
`Applicant
`---- -- -- --- - --------- ------- -- - --- - ----- - -- - ---- - --- ---- -- -- )(
`
`NOTICE OF OPPOSITION
`
`Rolex Watch U.S.A., mc. ("Rolex" or "Opposer"), a New York corporation with
`
`a business address of665 Fifth Avenue, New York, New York 10022, believes it wil be
`
`damaged by the registration of a five prong crown design open at the top as shown in
`
`application Serial No. 77405892, in mt. CL. 14. and hereby opposes the same.
`
`As grounds in support of
`
`this opposition, Opposer alleges as follows:
`
`1. Opposer, Rolex Watch U.S.A., mc., is a New York corporation with a
`
`business address of665 Fifth Avenue, New York, New York 10022.
`
`2. Opposer, for over 50 years, and since long prior to any date of first use upon
`
`which Applicant can rely, has adopted, used and continues to use its Crown
`
`Device trademark in connection with watches, watch bracelets, and related
`
`products.
`
`ROLEX001872
`
`
`
`3. Opposer is the owner of the following United States Principal Register
`
`registration which is valid, subsisting, unrevoked, uncancelled and
`
`incontestable:
`
`Trademark
`
`Registration No.
`
`Registration Date
`
`Goods
`
`l'
`
`0657756
`
`01128/58
`
`Timepieces and
`pars thereof
`
`Hereinafter referred to as the "CROWN DEVICE" trademark.
`
`4. Opposer is the exclusive distributor and warrantor in the United States of
`watches and related products, all of which bear the CROWN DEVICE
`
`trademark.
`
`5. Over the last 50 years, Opposer has spent in excess of $100,000,000 (One
`
`Hundred Million Dollars) advertising and promoting its CROWN DEVICE
`
`trademark.
`
`6. As a result of
`
`its long, continuous use, and its vast advertising of
`
`the CROWN
`
`DEVICE trademark in connection with watches, and related products,
`
`Opposer's CROWN DEVICE trademark has become extremely well known
`and famous, and products sold or marketed under the CROWN DEVICE
`
`trademark are immediately and exclusively associated with Opposer, Rolex.
`
`7. Applicant, on February 26, 2008, fied an application to register a design only
`
`mark in the shape of a five pronged crown open at the top in the U.S. Patent
`
`and Trademark Offce in mtemational Class 14, Serial No. 77405892.
`
`8. Applicant's mark so resembles Opposer's previously used and registered
`
`CROWN DEVICE trademark as to be likely, to cause confusion, mistake, or
`
`deception for purposes of Section 2(d) of the Trademark Act (15 U.S.c.
`
`§1052(d)).
`
`9. Applicant's use of a mark with a five prong crown design open at the top is
`
`likely to cause dilution by blurring, impairing the distinctiveness of Rolex's
`
`CROWN DEVICE trademark.
`
`ROLEX001873
`
`
`
`10. Applicant's use of a five prong crown design open at the top is likely to cause
`
`dilution by tamishment, haring the reputation of Rolex's famous CROWN
`
`DEVICE trademark.
`
`11. Applicant has made no significant monetary investment in the sale, promotion
`
`or advertising of its mark.
`
`12. Applicant was aware of Rolex's rights before the filing date of the subject
`
`application.
`
`13. The registration of Applicant's mark will improperly give to Applicant the
`
`appearance of exclusive statutory ownership rights in a mark that is
`
`confusingly similar to Rolex's CROWN DEVICE trademark in violation and
`
`derogation of
`
`the prior and superior rights ofRolex.
`14. By reason of the foregoing, Rolex believes that it shall be irreparably
`
`damaged by the registration of Applicant's mark.
`
`WHEREFORE, it is respectfully requested that this Opposition be sustained and
`
`that registration to Applicant be refused.
`
`Dated:~) ~¡O?
`
`By:
`
`VT0578.doc
`
`Respectfully submitted,
`
`Pe er Cousins
`Beth Frenchman
`Attorneys for Opposer
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`T: 212-688-5151
`F: 212-688-8315
`
`ROLEX001874
`
`
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA563705
`10/08/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Rolex Watch U.S.A., Inc.
`10/16/2013
`
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`
`Attorney
`information
`
`Peter Cousins
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`pcousins@gibney.com Phone:212-705-9811
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85835860
`10/08/2013
`
`Publication date
`Opposition
`Period Ends
`
`06/18/2013
`10/16/2013
`
`Christopher Reed, LLC
`4405 102nd. Street 4405 102nd. Street
`Lubbock, TX 79424
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: Wearable garments and clothing, namely,
`shirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`657756
`
`01/28/1958
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`04/02/1957
`
`Foreign Priority
`Date
`
`NONE
`
`ROLEX001881
`
`
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class U027 (International Class 014). First use: First Use: 1941/01/15 First Use
`In Commerce: 1943/06/01
`TIMEPIECES OF ALL KINDS AND PARTS THEREOF
`
`Attachments
`
`Notice of Opposition - Christopher Reed, LLC (00059660).PDF(237068 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Peter Cousins/
`Peter Cousins
`10/08/2013
`
`ROLEX001882
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`In re the Matter of:
`
`ROLEX WATCH U.S.A., INC.,
`
`Opposer,
`
`v.
`
`CHRISTOPHER REED, LLC.
`
`Applicant.
`
`Application Serial No. 85835860
`Marks opposed: Crown design, ~
`Filing date: January 29, 2013
`
`NOTICE OF OPPOSITION
`
`Rolex Watch U.S.A., Inc., hereby opposes registration of a crown mark (~) in
`
`International Class 25 for wearable garments and clothing, namely, shirts, which is the subject
`
`matter of Application Serial No. 85835860. As grounds in support of this opposition, Opposer
`
`alleges as follows:
`
`1.
`
`Opposer, Rolex Watch U.S.A., Inc. ("Rolex"), is a New York corporation with a
`
`business address of 665 Fifth Avenue, New Yorlc, New York 10022.
`
`2.
`
`Opposer, for over 70 years and long prior to any date of first use upon which
`
`Applicant can rely, has adopted, used and continues to use the distinctive ''~
`
`(hereafter
`
`"Crown Design" trademark) in connection with each Rolex watch distributed by Opposer in the
`
`United States. Specifically the Crown Design trademark appears on Rolex watch dials, watch
`
`bracelets and watch clasps.
`
`ROLEX001883
`
`
`
`3.
`
`Opposer is the owner of the following United States principal registration which
`
`is valid and subsisting:
`
`Trademark
`
`Registration No.
`
`Registration Date
`
`Goods
`
`'+~'
`
`0657756
`
`January 28, 1958
`
`IC14 for timepieces of
`all kinds and parts
`thereof.
`
`4.
`
`Opposer is the exclusive distributor and warrantor in the United States of watches
`
`bearing the Crown Design trademark.
`
`5.
`
`Opposer has spent in excess of $100,000,000 (one hundred million dollars), over
`
`the past 70 years, advertising and promoting its Crown Design trademark.
`
`6.
`
`As a result of its long, continuous use, and its vast advertising of the Crown
`
`Design trademark in connection with watches, watch bracelets and watch clasps, Opposer's
`
`Crown Design trademark has become extremely well known and famous, and watches and watch
`
`parts sold or marketed under the Crown Design mark are immediately and exclusively associated
`
`with Opposer, Rolex.
`
`7.
`
`Applicant, on January 29, 2013, filed an intent-to-use application to register a
`
`crown design mark (~') that is confusingly similar to Rolex's Crown Design in that both
`
`crowns feature a tapered five prong crown design with rounded tips.
`
`8.
`
`Applicant's crown marls and Rolex's Crown besign trademark are very similar in
`
`appearance.
`
`9.
`
`Applicant has made no significant monetary investment in the sale, promotion or
`
`advertising of its mark.
`
`10.
`
`Applicant was aware of Rolex's Crown Design trademark before the filing date of
`
`its applications.
`
`2
`
`ROLEX001884
`
`
`
`COUNT ONE
`
`Likelihood of Confusion,l5 U.S.C. ~ 1052(d)
`
`11.
`
`Applicant's crown mark so resembles Opposer's previously used and registered
`
`Crown Design trademark that, when applied to Applicant's proposed products in International
`
`Class 25, it is likely to cause confusion, mistake, or deception for purposes of Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052 (d).
`
`COUNT TWO
`
`Likelihood of Dilution by Blurring, 15 U.S.C. ~ 1125(c)
`
`12.
`
`Applicant's use of a five prong crown mark is likely to cause dilution by blurring,
`
`impairing the distinctiveness of Rolex's famous Crown Design trademark in violation of Section
`
`43(c) of the Trademark Act (15 U.S.C. §1125(c)).
`
`13. By reason of the foregoing, Rolex believes that it shall be irreparably damaged by
`
`the registration of Applicant's mark.
`
`WHEREFORE, it is respectfully requested that this Opposition be sustained and that
`
`registration to Applicant be refused.
`
`Respectfully submitted,
`
`ROLEX WATCH U.S.A.,1NC.
`
`By.
`
`~
`
`Peter Cousins (pcousins gibney.com)
`Beth Frenchman (bfrenchman@gibney.com)
`Gibney, Anthony &Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`T: (212) 688-5151
`F: (212) 688-8315
`
`ROLEX001885
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION has been
`day of October, 2013, by mailing through the U.S. Post Office to Christopher
`served on this
`Reed, LLC, 11009 Richmond Avenue, Lubbock, TX 79424 and by emailing a copy to:
`Jereinv~~CllristopherandReed.com and Jeremy1.01iis(cr~llotinail.com.
`r
`
`0
`
`ROLEX001886
`
`
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA574519
`12/04/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Rolex Watch U.S.A., Inc.
`12/04/2013
`
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`
`Attorney
`information
`
`Peter Cousins
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`pcousins@gibney.com Phone:212-705-9811
`Applicant Information
`
`85697658
`12/04/2013
`
`NONE
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`"Depesche" Vertrieb GmbH & Co. KG
`Vierlander Strasse 14
`Geesthacht 21502, DEX
`DEX
`Goods/Services Affected by Opposition
`
`08/06/2013
`12/04/2013
`
`NONE
`
`Class 014. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: (Based on Intent to Use) Jewellery, in
`particular, earrings, semi-precious stones, necklaces, bracelets, rings, brooches, precious stones;
`horological and chronometric instruments, in particular, wristwatches, alarm clocks, clocks, electric
`wall clocks, watches; precious metals and their alloys and goods of precious metals or coated
`therewith, included in this class, in particular, key rings, namely, trinkets and fobs, works of art,
`figurines, cans; charms for mobile telephones
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act section 2(d)
`Lack of Bona-fide Intent to Use the Mark, 15
`U.S.C. § 1051(b)
`
`Mark Cited by Opposer as Basis for Opposition
`
`ROLEX001887
`
`
`
`U.S. Registration
`No.
`Registration Date
`
`657756
`
`01/28/1958
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`04/02/1957
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 014. First use: First Use: 1941/01/15 First Use In Commerce: 1943/06/01
`TIMEPIECES OF ALL KINDS AND PARTS THEREOF
`
`Attachments
`
`72027385#TMSN.gif( bytes )
`NOTICE OF OPPOSITION - MY STYLE PRINCESS
`(00072716x7A624).pdf(271257 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Peter Cousins/
`Peter Cousins
`12/04/2013
`
`ROLEX001888
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`In re the Matter of:
`
`ROLEX WATCH U.S.A., INC.,
`
`Opposer,
`
`v.
`
`"DEPESCHE" VERTRIEB GMBH & CO.
`
`Applicant.
`
`Application Serial No. 85697658
`
`~~~~~ ~~th~~~'~
`Mark opposed:
`Filing date: August 7, 2012
`
`NOTICE OF OPPOSITION
`
`~Stvle Princess
`Rolex Watch U.S.A., Inc., hereby opposes registration of the mark
`
`in International Class 14 for jewelry, "in particular wristwatches" which is the subject matter of
`
`Application Serial No. 85697658. As grounds in support of this opposition, Opposer alleges as
`
`follows:
`
`1.
`
`Opposer, Rolex Watch U.S.A., Inc. ("Rolex"), is a New York corporation with a
`
`business address of 665 Fifth Avenue, New York, New York 10022.
`
`2.
`
`Opposer, for over 70 years and long prior to any date of first use upon which
`
`Applicant can rely, has adopted, used and continues to use the distinctive
`
`~°'~
`
`(hereafter
`
`"Crown Design" trademark) in connection with each Rolex watch distributed by Opposer in the
`
`United States. Specifically the Crown Design trademark appears on Rolex watch dials, watch
`
`bracelets and watch clasps.
`
`ROLEX001889
`
`
`
`3.
`
`Opposer is the owner of the following United States principal registration which
`
`is valid and subsisting:
`
`~~~~~~~~~~
`
`Registration No.
`
`Registration Date
`
`Goods
`
`'~+~'
`
`0657756
`
`January 28, 1958
`
`IC14 for timepieces of
`all kinds and parts
`thereof.
`
`4.
`
`Opposer is the exclusive distributor and warrantor in the United States of watches
`
`bearing the Crown Design trademark.
`
`5.
`
`Opposer has spent in excess of $100,000,000 (one hundred million dollars), over
`
`the past 70 years, advertising and promoting its Crown Design trademark.
`
`6.
`
`As a result of its long, continuous use, and its vast advertising of the Crown
`
`Design trademark in connection with watches, watch bracelets and watch clasps, Opposer's
`
`Crown Design trademark has become extremely well known and famous, and watches and watch
`
`parts sold or marketed under the Crown Design mark are immediately and exclusively associated
`
`with Opposer, Rolex.
`
`7.
`
`Applicant, on August 7, 2012, filed an intent-to-use application to register its
`
`mark that incorporates a crown design that is confusingly similar to Rolex's Crown Design in
`
`that both crowns feature a tapered five prong crown design with rounded tips.
`
`8.
`
`Applicant's mark that incorporates a crown design and Rolex's Crown Design
`
`trademark are similar in appearance.
`
`9.
`
`Applicant has made no significant monetary investment in the sale, promotion or
`
`advertising of its mark.
`
`10.
`
`Applicant was aware of Rolex's Crown Design trademark before the filing date of
`
`its applications.
`
`ROLEX001890
`
`
`
`11.
`
`Although Applicant has not yet used its mark, Applicant seeks to register its mark
`
`in ten (10) unrelated international classes of goods. This broad variety of classes of goods for
`
`which Applicant seeks registration makes it unlikely that Applicant has the requisite bona fide
`
`intent to use its mark in each of those classes, including on goods within International Class 14.
`
`COUNT ONE
`
`Likelihood of Confusion, 15 U.S.C. § 1052(d)
`
`12.
`
`Applicant's crown mark resembles Opposer's previously used and registered
`
`Crown Design trademark that, when applied to Applicant's proposed products in International
`
`Class 25, it is likely to cause confusion, mistake, or deception for purposes of Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052 (d).
`
`COUNT TWO
`
`Lack of Bona-fide Intent to Use the Mark, 15 U.S.C. ~ 1051(b)
`
`13.
`
`Applicant, by seeking to register its mark in ten (10) unrelated classes of goods
`
`each on the basis of its bona fide intention to use the mark, lacks the requisite bona fide intention
`
`to use the mark in International Class 14 in commerce, at the time the application is filed, which
`
`is in violation of 15 U.S.C. §1051(b).
`
`14. By reason of the foregoing, Rolex believes that it shall be irreparably damaged by
`
`the registration of Applicant's mark.
`
`3
`
`ROLEX001891
`
`
`
`WHEREFORE, it is respectfully requested that this Opposition be sustained and that
`
`registration to Applicant be refused.
`
`Respectfully submitted,
`
`ROLE WATCH U.S.A.,1NC.
`
`By
`
`Peter Cousins (pcousins@gibney.com)
`Beth Frenchman (bfrenchman@gibney.com)
`Gibney, Anthony &Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`T: (212) 688-5151
`F: (212) 688-8315
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION has been
`day of December, 2013, by mailing through the U.S. Post Office to
`served on this
`4th
`Applicant's filing correspondent:
`Grace Han Stanton
`Perkins Coie LLP
`1201 3rd Ave. Ste 4900
`Seattle, WA 98101-3099
`
`D
`
`ROLEX001892
`
`
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA633514
`10/17/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Rolex Watch U.S.A., Inc.
`Corporation
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`
`Citizenship
`
`New York
`
`Attorney informa-
`tion
`
`Peter Cousins
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`pcousins@gibney.com, bfrenchman@gibney.com Phone:212-705-9811
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`79145710
`10/17/2014
`
`1199742
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`Xinning County Laofoye Fur; Import & Export Co., Ltd.
`Group 3, Huaqiao Village
`
`09/23/2014
`10/23/2014
`
`12/12/2013
`
`CHINA
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Clothing, namely, skirts, coats, tops,
`blouses, sweatshirts, suits, vests, dresses, sweaters, sweatpants, shorts and pants; fur coats and
`jackets; leather coats; leather pants; girdles as foundation garments; scarfs; boas; pelerines; foot-
`wear; fur stoles
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`657756
`
`01/28/1958
`
`Application Date
`
`04/02/1957
`
`Foreign Priority
`Date
`
`NONE
`
`ROLEX001893
`
`
`
`Word Mark
`Design Mark
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 014. First use: First Use: 1941/01/15 First Use In Commerce: 1943/06/01
`TIMEPIECES OF ALL KINDS AND PARTS THEREOF
`
`Attachments
`
`72027385#TMSN.png( bytes )
`Notice of Opposition - Crown + Ouguan (00118581x7A624).pdf(253879 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Peter Cousins/
`Peter Cousins
`10/17/2014
`
`ROLEX001894
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`In re the Matter of:
`
`ROLEX WATCH USA, INC.,
`
`Opposer,
`
`V.
`
`XINNING COUNTY LAOFOYE
`
`FUR IMPORT & EXPORT CO. LTD.
`
`Applicant.
`
`
`
`Application Serial No. 79—145,710
`45“}.
`.7».
`Mark opposed: A
`Filing date: December 12, 2013
`
`NOTICE OF OPPOSITION
`
`Rolex Watch U.S.A., Inc., hereby opposes registration of a crown mark (riff-ls) in
`
`International Class 25 for clothing, namely, skirts, coats, tops, blouses, sweatshirts, suits, vests,
`
`dresses, sweaters, sweatpants, shorts and pants; fur coats and jackets; leather coats, leather
`
`pants; girdles as foundation garments; scarfs; boas; pelerines; footwear, fur stoles which is the
`
`subject matter of Application Serial No. 79-145,710. As grounds in support of this opposition,
`
`Opposer alleges as follows:
`
`1.
`
`Opposer, Rolex Watch U.S.A., lnc. (“Rolex”), is a New York corporation with a
`
`business address of 665 Fifth Avenue, New York, New York 10022.
`
`2.
`
`Rolex, for over 70 years and long prior to any date of first use upon which
`
`Applicant can rely, has adopted, used and continues to use the distinctive
`
`W
`
`(hereafter
`
`ROLEX001895
`ROLEXOO1895
`
`
`
`“Crown Design” trademark) in connection with each Rolex watch distributed by Rolex in the
`
`United States. Specifically the Crown Design trademark appears on Rolex watch dials, watch
`
`bracelets and watch clasps.
`
`3.
`
`Rolex is the owner of the following United States principal registration which is
`
`valid and subsisting:
`
`
`Trademark
`
`Registration No.
`
`Registration Date
`
`thereof.
`
`0657756
`
`January 28, 1958
`
`ICl4 for timepieces of
`all kinds and parts
`
`4.
`
`Rolex is the exclusive distributor and warrantor in the United States of watches
`
`bearing the Crown Design trademark.
`
`5.
`
`Rolex has spent in excess of $100,000,000 (one hundred million dollars), over the
`
`past 70 years, advertising and promoting its Crown Design trademark.
`
`6.
`
`As a result of its long, continuous use, and its vast advertising of the Crown
`
`Design trademark in connection with watches, watch bracelets and watch Clasps, Rolex’s Crown
`
`Design trademark has become extremely well known and famous, and watches and watch parts
`
`sold or marketed under the Crown Design mark are immediately and exclusively associated with
`
`Rolex.
`
`7.
`
`Applicant, on December 12, 2013, based on an International Registration filed an
`
`application under 66(a) of the Lanham Act seeking to register a crown mark ( FL.) that is
`
`substantially indistinguishable from and confusingly similar to Rolex’s Crown Design in that
`
`both crowns feature a tapered five prong crown design with rounded tips.
`
`8.
`
`Applicant’s crown mark and Rolex’s Crown Design trademark are very similar in
`
`appearance.
`
`ROLEX001896
`ROLEXOO1896
`
`
`
`9.
`
`Applicant’s use of the word Ouguan has no significance or recognition in English
`
`and therefore cannot dispel confusion caused by the use of a crown mark.
`
`10.
`
`11.
`
`The dominant feature in Applicant’s mark is the five prong crown mark.
`
`Applicant has made no significant monetary investment in the sale, promotion or
`
`advertising of its mark.
`
`12.
`
`Applicant was aware of Rolex’s Crown Design trademark before the filing date of
`
`its applications.
`
`COUNT ONE
`
`Likelihood of Confusion 15 U.S.C.
`
`1052 d
`
`13.
`
`Applicant’s crown mark so resembles Rolex’s previously used and registered
`
`Crown Design trademark that, when applied to Applicant’s proposed products in International
`
`Class 25, it is likely to cause confusion, mistake, or deception for purposes of Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052 (d).
`
`COUNT TWO
`
`Likelihood of Dilution b Blurrin
`
`15 U.S.C.
`
`1125 c
`
`14.
`
`Applicant’s use of a five prong crown mark is likely to cause dilution by blurring,
`
`impairing the distinctiveness of Rolex’s famous Crown Design trademark in violation of Section
`
`43(0) ofthe Trademark Act (15 U.S.C. §1125(c)).
`
`ROLEX001897
`ROLEXOO1897
`
`
`
`15.
`
`By reason of the foregoing, Rolex believes that it shall be irreparably damaged by
`
`the registration of Applicant’s mark.
`
`WHEREFORE, it is respectfully requested that this Opposition be sustained and that
`
`registration to Applicant be refused.
`
`Respectfully submitted,
`
`ROLEX WATCH U.S.A., INC.
`
` By:
`
`0111
`
`31
`__
`Peter Cousins (pcousins@gibney.com)
`Beth Frenchman (bfrenchman@gibney.com)
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`
`New York, NY 10022
`T: (212) 688-5151
`F: (212) 688—8315
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION has been
`served on this 17th day of October, 2014, by mailing through U.S. Post Office to the following:
`
`ROLEX001898
`ROLEX001898
`
`111 aP. Toranzor
`
`k
`
`Long Yue
`Xinning County Laofoye Fur Import & Export Co., Ltd.
`Group 3, Huaqiao Village,
`Anshan, Xinning County,
`Shaoyang, Hunan Province CHINA
`Zip Code 422700
`
`And
`
`Unitalen Attorneys At Law
`7th Floor, Scitech Place,
`No. 22, Jian Guo Men Wai Ave.
`100004 Beijing
`
`
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA651667
`01/22/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Rolex Watch U.S.A., Inc.
`Corporation
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`
`Citizenship
`
`New York
`
`Attorney informa-
`tion
`
`Peter Cousins
`Gibney, Anthony & Flaherty, LLP
`665 Fifth Avenue
`New York, NY 10022
`UNITED STATES
`pcousins@gibney.com Phone:212-705-9811
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`79145541
`01/22/2015
`
`1199381
`
`Spooks GmbH
`Oberbech 8
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`
`01/06/2015
`02/05/2015
`
`02/13/2014
`
`GERMANY
`Goods/Services Affected by Opposition
`
`Class 018. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Stirrups, animal wraps, covers,
`namely,horse covers, horse blankets, horse cloths
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Clothing, namely, jackets, sweaters,
`pullovers, riding breeches, blouses, polo shirts, T-shirts, skirts, dresses, trousers, scarves, vests;
`fleeces, namely, bottoms, pullovers, shorts, tops,vests, sweaters, pullovers, riding breeches, blouses,
`polo shirts, T-shirts, skirts, dresses, trousers, scarves, vests; headgear,namely, hats, caps; footwear
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